Tag: UPC News

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“Long time no see, long time no say”: UPC is back on (fast) track!

Glanmire Road Station in the 1890s in Cork, Ireland. Photo by National Library of Ireland.

Photo via <a href=”https://www.goodfreephotos.com/”>Good Free Photos</a>

As the title of this post paraphrases lyrics of a song from the French band Phoenix, the legendary bird is what comes to mind when speaking about the UPC. 

Indeed, since our last article reporting German constitutional court referral which (almost) killed the UPC, many things happened in order to agree with the well-known proverb “where there’s a will there’s way”. 

Here is a catch-up post with the latest news on the UPC and its upcoming implementation (official start should occur during the first half of 2023): 

  • 8/07/2022 | “Early 2023” horizon: As a results of many “significant steps” taken during its second meeting, the UPC Administrative Committee indicated that “the timing of the start of operations of the Court can reasonably be expected to occur in early 2023”. The Committee took the opportunity of this meeting to confirm the setting-up of local and regional divisions of the Court of First Instance and to adopt the Court’s Rules of Procedure and its Table of Fees which will both enter into force on September 1st, 2022.  

More information on this meeting can be found in a statement on the UPC website and all non-confidential adopted documents are made available. 

Inter alia, the Committee lifted the restrictions once contemplated for the access to the decisions and orders issued by the Court, as wished by many professional bodies, in particular for transparency and public trust reasons. Such restriction (no automatic publication) is maintained for written pleadings and evidences, that could be disclosed “upon reasoned request” (see Amendment 24 Rule 262 – “Public access to the register”). 

On July 8th, the Committee were also supposed to designate the UPC’s full and part-time judges. We will keep you posted as soon as more information will become available. As to where these judges will actually be located in Paris, it has recently been indicated that there will be two entities : one located quai de la Mégisserie and the other located on the Ile de la Cité (within the Court of Appeal and the international chamber of the Commercial Court). 

  • 28/06/2022 | Referendum in Ireland regarding the UPC in 2023/2024. As reported by the national Department of Enterprise, Trade and Employment, “The Government today reaffirmed its commitment to participate in the European Unitary Patent system and Unified Patent Court (UPC) and to hold a referendum to enable Ireland to do so”. The announcement also indicates that “Ireland has committed to the establishment of a local division of the Court to operate the terms of the agreement subject to the successful passage of a Constitutional Referendum. The Tánaiste will return to Government to outline the resources required to establish the same.”  
  • 19/01/2022 | Entry into force of the Provisional Application Protocol (PAP): General Secretariat of the Council of the European Union, in its role as Depository, declared that the Protocol on Provisional Application (PPA) of the UPC Agreement entered into force on January the 19th, 2022. This announcement followed the ratification of the PPA by Austria (and the subsequent deposition) which thus triggered the start of the PAP allowing the conduct of the last part of the preparatory work in establishing the Court. 

As a recall, in order to establish the UPC, 13 countries needed to ratify the UPC Agreement, including (post Brexit) France, Italy and Germany. Regarding the latter, Germany ratified the PPA but decided to delay final ratification of the UPC Agreement until a time at which the Court could be operational. Such final ratification by Germany will automatically trigger the entry into existence of the UPC on the first day of the fourth month thereafter. 

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The UK will not take part in the UPC

Brexit deal and UK participation to the UPC

The suspens is over:

The UK will not be a member of the UPC and will not deliver Unitary Patents.

The UK’s negotiating objectives, i.e its overall goals for the next phase of Brexit, published last week in fact declares:

“It is a vision of a relationship based on friendly cooperation between sovereign equals, with both parties respecting one another’s legal autonomy and right to manage their own resources as they see fit. Whatever happens, the Government will not negotiate any arrangement in which the UK does not have control of its own laws and political life. That means that we will not agree to any obligations for our laws to be aligned with the EU’s, or for the EU’s institutions, including the Court of Justice, to have any jurisdiction in the UK.“

Moreover, as reported by JUVE Patent « A press office for the Cabinet Office confirmed (…) « I can confirm that the UK will not be seeking involvement in the UP/UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation.”

Surprise..!

Although this does not come entirely as a surprise, the UK government had nonetheless sent encouraging messages regarding the country’s participation to the UPC system after Brexit.

Its successive IP ministers had issued statements reiterating their commitment to the court; surveys had showed an overwhelming support across all industries for the UK’s participation; and the UPC’s Central division in London had already been arranged. Last but not least, the UK gouvernement had ratified in 2018 the UPC Agreement as well as the Protocol on Privileges and Immunities. These were interpreted as strong signals of the UK’s continuing participation to the UPC.

On the other hand, the raison d’être of Brexit seemed to go directly against Opinion 1/09 of the CJEU, which makes clear that the UPC Agreement requires member states to respect the primacy of EU law as well as the jurisdiction of the CJEU.

Politics thus prevailed.

Reacting to the news Alexander Ramsay, head of the UPC Preparatory Committee declared « (e)ver since the Brexit referendum in 2016 we were aware that something like this could happen, so the decision of the UK government does not come as a total surprise.”

What about the UK’s ratification of the UPC Agreement?

The next step for the UK government is now to seek to rescind its ratification of the Unified Patent Court Agreement. However, as Ramsay explains, “(t)here are no provisions in the UPC agreement for the case of a member state that has ratified the agreement to drop out. It’s therefore very likely that the UK will have to launch a procedure under the Vienna Convention on the law of treaties.”

It will be interesting to see how the UK government intends to proceed.

What is the UPC next challenge?

The next challenge for the UPC is to move forward without the UK.

To be continued…

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A new Christmas tale by the German constitutional court?

In Spring 2017 the German constitutional court was asked to assess the constitutionality of the German legislation allowing the country’s ratification of the UPCA. The court backlog has so far meant that the decision is still pending.

However, on 20th November, Peter Huber, the judge rapporteur in charge of the challenge before the German constitutional court declared that the Court will hand its decision in early 2020.

In his interview with Managing IP, Huber stated that it was his “intention to issue a decision on the complaint made against the legislation enabling Germany to ratify the UPC Agreement early next year”.

The final time frame however still depends on “the time it takes for him (the judge rapporteur) and other judges at the Constitutional Court to deliberate on and amend the judgement“.

Although this declaration is not an official communication from the German constitutional court itself, whose spokesman did not actually confirm the content of the interview, it still gives hope as to the coming into action of the UPC.

Last week, Alexander Ramsay -Head of the UPC Preparatory Committee- reacted to this declaration and said that the UPC could be operational by early 2021. This assumes that Germany ratifies the UPCA very soon after its constitutional court’s decision. The UPC will then need 8 months from Germany’s ratification to be ready.

Indeed once this ratification takes place the provisional phase can start, and in turn the three governing bodies (the administrative, budgetary and advisory committees) of the court can be set up. The end of the provisional government period will then be decided by the member states.

However, Alexander Ramsay was keen to emphasise that the UPC is putting the extra time, given by the German constitutional challenge, to good use.

The IT system for example is now ready and has benefited from the ratification delay with IT teams checking that the “IT system can actually work together“. The Registry Rules are also tested to check that they are functional. Similarly the recruitment of judges is under way with around 1000 candidates to choose from for around 50 qualified judges positions and 50 legally qualified judges positions.

All is needed now is for the German constitutional court to issue its decision…

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The Italian government to ask for London UPC Central Division to be transferred to Milan?

Italian Foreign Affairs confirm Milan candidacy for UPC Central Division

The Italian Foreign Ministry confirmed that the city of Milan and the Lombardy region wish to host the UPC Central Division for human necessities, chemistry and metallurgy that is -for now- located in London, were the UK not be a participating member after Brexit.

The Italian Foreign Minister indicates that the city of Milan and the Lombardy region will thus to that effect submit their candidacy to the Italian government.

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Preparatory Committee re-opens judges recruitment campaign

UPC Judges recruitment 2019

The Unified Patent Court published on 3rd June has announced that “the Preparatory Committee has agreed to re-open recruitment for judicial positions to new applications“. This will be the second recruitment campaign after the first in 2016.

The 2019 campaign is a “‘top-up’ exercise to complement the recruitment held three years ago” . As in 2016, this campaign aims at finding legally and technically qualified judges.

This new campaign should also” allow those that were not eligible, or decided not to apply three years ago, to submit an application provided they now meet the correct criteria. “

The job adverts for legally and technically qualified judges read :

“Legally qualified judges to serve at the Court of First Instance or at the Court of Appeal – several full-time and part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation. Specific training in patent litigation according to Art. 2(3) of UPCA Statute will also be accepted.

Candidates shall possess the qualifications required for appointment to judicial offices in the Member State of which they are nationals. Reference is made to the official information provided in the Information on the selection process of UPC judges. 

In addition, the ideal candidate will have:
–      extensive experience in the field of patent litigation,
–      initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
–      the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
–      well-developed written, verbal and interpersonal communication skills,
–      strong analytical skills,
–      the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries, allowances, social benefits and a pension scheme comparable to that offered at other intarnational courts. The net monthly salary for this vacancy is of EUR 11 000 for full-time judges at the Court of First Instance and of 12 000 for full-time judges at the Court of Appeal. 

Technically qualified judges to serve at the Court of First Instance and at the Court of Appeal – several part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Qualifications: Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation.

Candidates shall have

  • a university degree,
  • proven expertise in a field of technology and
  • proven knowledge of civil law and procedure relevant in patent litigation.

Specific training in patent litigation according to art 2(3) of UPCA Statute will also be accepted. In addition, the ideal candidate will have

  • extensive experience in the field of patent litigation
  • initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
  • the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
  • well-developed written, verbal and interpersonal communication skills,
  • strong analytical skills,
  • the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries allowances, social benefits and a pension scheme comparable to that offered at other international courts. The net monthly salary for this vacancy is of EUR 11 000 for Court of First Instance judges (full-time equivalent). ” 

As for the process and timeline the ad specifies that “the successful candidates will be selected on the basis of qualifications and relevant experience, supplemented by interviews. Appointments will be made by the UPC’s Administrative Committee. ” Both dealines for application are midnight CET 29.07.2019

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UPC location confirmed for Paris central division

Paris central division location: Quai de la Mégisserie

The location of the Paris central division has been confirmed this week. It will seat Quai de la Mégisserie.

The court will hear physics, electricity, performing operations, transporting, fixed constructions, textile and paper patent cases (See Annex II of the UPC Agreement) in “functional” offices. Hence, although not in a justice-dedicated building the Paris central division will be very close to the historical Palais de Justice and the île de la Cité.

You can see pictures here

We now know all three locations of the central divisions, with the central division in Munich in the city courthouse in the Fasangarten neighbourhood and the London central division in an office building in Aldgate.

Other locations have also been made public:

Munich local division: Schleißheimerstr. 141, 80097 Munich(link is external)
Mannheim local division : Schubertstr. 11, 68165 Mannheim(link is external)
Dusseldorf local division : Cecilienallee 3, 40474 Dusseldorf(link is external)
Hamburg local division : Sievekingplatz 1, 20355 Hamburg(link is external) Milano local division: Via S. Barnaba 50, 20122 Milano Nordic-Baltic Regional Division: Scheelegatan 7, 112 28 Stockholm

As for the Court of Appeal, it will indeed be in Luxembourg as provided by article 9 of the UPC Agreement:

Court of Appeal: Nouvel Hémicycle, 1, rue du Fort Thüngen, L-1499 Luxembourg

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Latest news: a few milestones have been reached

Latest news and milestones from the UPC

Where did the UPC stand at the end of 2018?

In December 2018 the Unified Patent Court Preparatory Committee published a statement summarizing last year’s major events for the Court. It listed notably Latvia and the UK’s ratifications of the UPC Agreement, as well as the progress of the technical and operational preparations.

On a less positive note, the statement also mentioned the fact that the German constitutional case was still pending.

Since the begining of 2019, a few milestones have since been reached:

  • Milestone 1: In January, Austria signed the UPC Protocol on Provisional Application (PPA). The PPA allows some provisions of the UPC Agreement to come into force early. This protocol will allow final preparations to take place, such as the recruitment of judges, and ensure that the UPC can start smoothly. Under Article 3, the PPA will come into force the day after France, Germany, the UK and 10 other countries ratify, or inform the depositary that they have parliamentary approval to ratify the Agreement and have consented to be bound by the PPA. So far France, the UK and nine other countries (Belgium, Bulgaria, Denmark, Estonia, Finland, Italy, Luxembourg, the Netherlands and Sweden) have already done so.  Germany signed the PPA on 1 October 2015 but must now ratify it. However, Germany’s ratifications of the PPA and UPC Agreement, is on hold due to the constitutional complaint pending before the German Constitutional Court.
  • Milestone 2: In February, in Italy, the Parliament has amended its legislation (legislative decree n°18 dated 19th February 2019) to make it compatible with the Unitary Patent Regulation (EU 1257/2012) and the UPC Agreement. The Italian Industrial Property Code now recognises the unitary patent and introduces new exceptions to infringement (Article 27(c), (f), (g), (h) and (k) UPC Agreement), such as the “plant breeders’ exemption” (“The rights conferred by a patent shall not extend to any of the following: (…) c) the use of biological material for the purpose of breeding, or discovering and developing other plant varieties and the “interoperability exemption”) and the interoperability exemption (” The rights conferred by a patent shall not extend to any of the following: (…) k) the acts and the use of the obtained information as allowed under Articles 5 and 6 of Directive 2009/24/EC1 , in particular, by its provisions on decompilation and interoperability“) .
  • Milestone 3: In Germany, the constitutional review of the law enabling the country to take part in the UPC is still ongoing. The German Federal Constitutional Court has however listed the constitutional Complaint with the cases it will rule on in 2019. Moreover, in February 2019 the four committees of the German Parliament voted against a motion to repeal the UPC legislation. The motion will now return to the Bundestag for a definitive vote, which should a priori reject it.
  • Milestone 4: In March, the EPLIT published a short survey regarding the dress code for representatives before the UPC. The survey asked three questions: ” Should representatives wear uniform robes in oral proceedings before the UPC?” “Why should or shouldn’t they wear uniform robes in oral proceedings before the UPC?” and “If they should, which colour should the robe be?” Indeed, the draft Code of Conduct adopted by the Preparatory Committee mentions a dress code (“Finally, we note that once decided for the judges, some provision on the dress code for Representatives should be added to avoid possible discrimination.”). This is because in some participating member states, representatives already wear a robe, such as in France, Germany the Netherlands or the UK. The EPLIT states that apparently a blue robe has been proposed, and annouced the results of the survey at the EPLIT’s annual meeting. The results have not yet been published.

Despite some progress, the UPC’s start of operation is still very uncertain.

Indeed, although the UPC’s entry into force was announced for 2019, the uncertainty created by Brexit as well as by the German constitutional challenge has considerably slowed down the process. One can now hope that there is a better visibility over the UPC’s future once the EU and the UK agree on a Brexit deal.

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How is it going to work? A new update on the UPC Case Management System:

Brexit and the German constitutional challenge

On Monday 25/01/2016 was organised in Paris a presentation on the UPC Case Management System with the UPC IT Team. The UPC Case Management System is the platform that will allow the submission of actions and their documents before the UPC, the communication with Judges and Clerks, and the free access by the public to all cases and decisions.

This system is therefore central to the UPC and can already be accessed here. Users are encouraged to leave feedbacks to help shape the system, even if as indicated by the IT Team in its weekly newsletter, no further changes will take place until after March 2016, and all feedbacks “will be logged and put in the backlog for future development which will take place in April 2016“.

Below are the main points developed in this presentation which should clarify the major elements of the UPC Case Management System.

IT and Security:

The Case Management System (CMS) will be available from any device. It will require users to register on the UPC CMS. Registered users will need their email address, their password, and a code sent by text to the user’s phone to log in.

Users will have to register twice: first for the trial version of the UPC CMS (you can do so here) and then to the real version of the UPC Case Management System. (See Registration for more info)

The EU STORK system may be used, although not initially. The aim of the STORK project is “to establish a European eID that will allow citizens to establish new e-relations across borders just be presenting their national eID”. This system would allow users to get connected to the UPC CMS with their national login.

Data is stored in Munich, Germany, by a company which is a Deutch Telecomm subsidiary. Two penetration attempts have been simulated and failed. Twenty attacks have already been recorded.

The IT management will be handed over to the permanent IT Team in Luxembourg in March 2016 .

There will be the possibility to connect law firms’ IT system with the UPC CMS  -to obtain alerts for example. There will also be the possibility to synchronise the Court calendar with firms’ calendars.

The Court’s diary and the case history will be publicly accessible. Once on the UPC CMS, the cases will be freely available to be viewed by the public (see confidentiality section for more info).

Arbitration Centre:

The Arbitration Centre will use the same CMS. The Arbitration Centre CMS will however be independent from the UPC. It won’t therefore be possible for the UPC to access the Arbitration Centre CMS.

Registration:

Internal users: Clerks, Judges, Administrators will be registered by the system administration.

External actors: The parties (claimant and defendant) and third parties (witness and experts) will need to apply for registration before being able to access the system.

At the moment the creation of groups is not possible but it will be allowed soon. All users will need to register individually, then one user will become an Administrator and will be able to create a group of representatives. It won’t be possible to have more than one administrator.

Processes:

The IT Team built the UPC CMS around the Rules of Procedure. Therefore, if the Rules do not provide for a specific provision, the IT Team cannot create it in the IT system. By the end of February/Beginning of March the rules of procedure will be finalised and the IT Team will be able to finalise the UPC CMS.

Cases are included within a process of a pre-determined actions: Infringement, Declaration of non-Infringement, Revocation, Compensation for licences, Action against decision of the EPO.

Each action is organised around a system of logically interconnected sub-processes, for example: submit a statement of claim, raise a preliminary objection.

All actions, undertaken at any stage, of the process are recorded and will be the object of an email to the user, confirming that that specific action has been carried out by the user.

Timers are also available for each task. They will ensure that every action is accomplished within the procedural time limit.

Documents:

Every action is built around documents: forms (which will be pre-filed to save time), pleadings, exhibits, orders, applications.

Documents will be stored on the CMS. It is not possible at the moment to create a draft document and keep working on the system but it is possible to create a draft case, which will only become public and available to the court once it is submitted. It will therefore be possible for an external user to update documents until submission.

If the document is submitted by an external user, it can be rejected or validated by a Court member. If rejected, the external user can submit a request of amendment.

In case of a group of representatives, all members will be able to submit documents.

Confidentiality:

Request for confidentiality can be obtained for confidential documents. It is however not automatic and can be challenged. The documents included in the request for confidentiality will be notified to the judge for an evaluation of the documents’ confidential nature.

If the documents are not deemed confidential they will be available to the public. The submitting party can however withdraw these documents. If they are deemed confidential, the party who submitted them must provide a redacted version, which will be available to the public.

It will be possible to create a confidentiality club, which may include the defendants and/or any chosen third party.

Communication:

CMS will send electronic receipts to confirm that the documents have been received and that an action has been performed for the case. The UPC however still has to provide the details of these emails.

The Participants to the Paris’ workshop asked the IT team to have the possibility to attach to the case the communication with the Judge. The IT Team responded favourably to this request.

Audio (Interim Conference) and Video (Final Hearing) record of court sessions will be available on the CMS.

Opt-out:

A patent can be opted-out by filling a form on the CMS. It requires the patent number. Once the patent number is entered, the information will be extracted from the EPO registers, and will be used for the automatic filling-in of the opt-out form.

The EPO’s information might not be up to date, so it will be important to check the pre-filled form and amend any incorrect information. In fact, if some details are missing or are incorrect the opt-out is ineffective until corrected (Rule 5.6).

Once the information is amended on the UPC CMS, it will become public. The EPO will therefore have an opportunity to amend its register. At the moment, there is however no partnership between the EPO and the UPC. It is therefore uncertain whether the EPO’s registers will be updated.

There will be a different opt-out form for the SPCs.

It is presently only possible to opt-out patents one by one. However the IT Team is looking at an option, which would enable patent owners to opt-out baskets of patents (not more than 30).

Claimants will be able to file a claim even if the patent has been opted-out, to prevent a legitimate action to be stopped by a fraudulent opt-out. In fact when submitting a claim for a patent, which is identified as opted-out by the CMS, its opt-out will be flagged and the CMS will identify the cases in which this patent has appeared. If there is a disagreement as to whether the patent has actually been opted-out (for example the claimant could argue that it has not been opted-out by the patent proprietor but by someone else) it will be to the court to decide whether the patent was opted-out.

The method of payment is not yet scheduled as the fees are not determined yet. If there is a fee it will be payable online.

The Opt-out will be ready by March. No exact date however for the public to start opting-out.

Ownership:

The patent proprietor is the person shown in the relevant register. Rule 8.5 however makes clear that this presumption can be rebutted by the actual proprietor by showing that there are entitled to be recorded as proprietor in each country where the patent has been validated, even if  in fact not registered.

Therefore, if the claimant is not the proprietor, they will be required to submit a declaration of proprietorship following Rule 5.3(e), to prove that they can legitimately pursue the case or the opt-out. This document won’t however be checked by UPC officials.  Thus, if a problem arises the validity of the opt-out will have to be challenged before the court.

Fees:

The fees will be decided in February by the Preparatory Committee. The IT Team will then design a user-friendly fee platform to allow users to pay online. No other form of payment will be possible. The assessment of the fee should be based on “fair royalties” as the Preparatory Committee intends to have simple fee guidelines.

Languages:

Where a Member State nominates a language of proceedings both under Article 49(1) and Article 49(2) UPCA, the claimant may choose the language of proceedings subject to:

-Rule 14.2(b)-the “Belgian exemption” which applies when there is only one local exception;

-Rule 14.2(c)-the judge rapporteur may in the interests of the panel of judges order that the decision may be given in the Article 49(1) language together with a certified translation.

Concerning the CMS, the IT Team is now waiting for it to be finalised to start the translations that will enable claimants to have access to the CMS in English, French or German.

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Encouraging steps towards opening of Unified Patent Court

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

Since the Brexit referendum the future of the UPC has been in jeopardy and, despite the optimistic schedules published by the UPC Preparatory Committee, its opening is still uncertain. Recently however, member states have taken encouraging steps.  The UPC may thus soon become a reality.

 

Key steps in Belgium:

The Parliament amended its legislation to accomodate the Unitary Patent and the Unified Patent Court. This amendment brings some Belgian patent law exceptions in line with those in the UPC Agreement. They inlcude notably the plant variety protection,  the “Bolar” type exceptions and the use of information obtained under Directive 2009/24. Similarly,  Belgium will carry out a linguistic check of other patent law exceptions to ensure coherence. Finally,  it will introduce a provision enabling patent owners to benefit from the protection of a European Patent -without unitary effect. Patent owners will thus enjoy some protection even if their request for a unitary patent is rejected.

 

Key steps in Germany:

The challenge, of the legislation allowing for the ratification of the UPC agreement, before the German constitutional court has progressed.  The German Bundestag and Federal government as well as by the German Federal Bar Association (BRAK) and Bar Association (DAV), the European Patent Lawyers Association (EPLAW), the German Association for the Protection of Intellectual Property (GRUR) and the European Patent Litigators Association (EPLIT) have in fact all filled statements.

 

Key step in the UK:

 The Unified Patent Court (Immunities and Privileges) Order 2018 was made on 8th February 2018 after both houses of Parliament approved it. It confers legal capacity to the Unified Patent Court and grants immunities and privileges to its representatives (Judges, Registrar, Deputy-Registrar and staff). This comes after the Scottish statutory instrument  which was approved by the Scottish Parliament in October 2017 and was made by the Privy Council in December 2017. This statutory instrument was the last step for the UK to complete before ratifying the UPC Agreement.

 

Key steps in France:

 The French Senate adopted on 20th Decembre 2017 the bill authorising the ratification of the UPC Protocol on Privileges and Immunities, after it was adopted by the National Assembly on 4th October 2017. The law authorising such ratification was subsquently passed on 30th December 2017 and the Protocol was eventually ratified on 14th February 2018.

 

Key steps in Italy:

Italian parliament passed two laws at the end of 2017. On 25th October 2017, a law allowed the Italian government to amend the Italian Intellectual Property Code and align it with the Unified Patent Court Agreement, which Italy ratified in 2016 .  Italian Law n°163 therefore provides that  “where unitary effect is requested for a European patent and the request is revoked or withdrawn, the term for filing an Italian translation with the Italian Patent and Trademark Office will run from the date of receipt of the communication of the final revocation or refusal of unitary effect, or from the date of receipt by the European office of the withdrawal request“.  On 4th December 2017, a law allowed for Italy’s ratification of the UPC Protocol on Privileges and Immunities.

 

Key step in Latvia:

Latvia deposited its instrument of ratification of the UPC Agreement on 11th January 2018. It become thereby the first participating country to ratify the UPC Agreement in 2018.

 

Key step in Luxembourg:

Luxembourg is preparing the ratification of the UPC Agreement. The Luxembourg’s Council of State gave its consent for the bill ratifying the UPC Protocol on Privileges and Immunities in February 2018. The law was published in Luxembourg official journal and will come into force on 18th March 2018. It is especially important for Luxembourg to ratify this Protocol. Indeed, its ratification -as well as those of France, the UK and Germany- is necessary for the Protocol to come into force.

 

 

 

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The European Parliament Legal Affairs Committee on the UPC state of affairs

EU Parliament legal affairs committee UPC

The European Parliament Committee on legal affairs organised a session last week on the Unitary Patent Package. Benoit Batistelli the President of the EPO, Mr Tokarski from the EU Commission Directorate-General for “Internal Market, Industry, Entrepreneurship and SMEs”, and Mr Bernhard Rapkay EU MP of the Socialist and Democrats group, presented the UPC state of affairs.

Ratification of the Unified Patent Court Agreement and Protocol for the provisional application of the Agreement for the Unified Patent Court Agreement: 

Mr Batistelli gave an update on the state of ratification. He indicated that:

  • Germany should be ratifying the UPCA in the coming weeks.
  • the UK has publicly committed itself to ratifying the UPCA before leaving the EU. In fact, Jo Johnson, the new UK Intellectual Property minister confirmed to President Batistelli that the UK government is committed “to finalize the national ratification of the UPC treaty in order for the Court to be operational on 1st December 2017”. This will enable the EPO to deliver the first Unitary Patent at the same time.

The EPO’s President also clarified the impact of Brexit on the UPC. He explained that the Unified Patent Court Agreement cannot come into force unless it is ratified by 13 states. These 13 states must include France, Germany, and the United Kingdom. Therefore for the UPC to come live at the date announced by the Preparatory Committee, the UK must ratify the UPCA before it leaves the EU. If it does not, Italy could become the third state upon whose ratification the UPC would become operational. Italy is in fact ranked fourth in the EU for patent filings, just after the UK.

Mr Tokarsky explained that everything is ready at technical level. However participating member states need to ratify the Protocol on the provisional application of the Agreement on the Unified Patent Court. Mr Tokarsky particularly insisted for the states that already have parliamentary approval to actually ratify the Protocol. He also highlighted that the necessary ratification must take place before the next Competitiveness Council meeting on 29th May. Indeed the UPC requires a minimum of six months to get ready and become operational.

Mr Tokarksy also expressed the Commission’s hopes all EU countries which participated to the enhanced cooperation ratify the UPCA. Similarly the EU commission wishes for most participating member states to ratify the Unified Patent Court Agreement by the end of 2017. To that effect, the EU Commissioner called all states to complete their ratification without further delays. Mr Tokarsky likewise appealed to all EU institutions, and more specifically the EU Parliament, to encourage states to work in that direction.

Mr Rapkay a contrario delivered a less optimistic speech and cast doubts as to a quick ratification by the UK.

The Unitary Patent Package and SMEs: 

This committee meeting was also an opportunity for the EPO and the EU Commission to underline their commitment to SMEs. Mr Batistelli insisted that the UPC would be very beneficial to SMEs across the EU. It will in fact simplify proceedings and allow for an EU wide enforcement of the court’s decisions, including injunctions. He also highlighted that the cost (around 5,000 euros for 10 years) and the increased legal certainty brought by the Unitary Patent will allow SMEs to better protect their intellectual property rights. Additionally, Mr Takarsky explained that the EU commission is now developing a specific strategy for SMEs to develop their IP rights as reflected in the EU annual report 2016.

The video of the Legal Affairs Committee:

http://www.europarl.europa.eu/news/en/news-room/20170317IPR67572/committee-on-legal-affairs-meeting-23032017-(am)